LITTLE ROCK, Ark. — The Arkansas Lottery Commission says the state Supreme Court should dismiss a lawsuit about the lottery's name.
Assistant Attorney General David Curran on Thursday asked the justices to dismiss Alpha Marketing's lawsuit after a lower court last year refused to do so.
(See Arkansas Supreme Court hears arguments in lottery trademark suit, Lottery Post, Dec. 9, 2011.)
The Lottery Commission has said it should be immune from the lawsuit, but a judge in Pulaski County ruled in 2012 that the lawsuit could not be barred under the sovereign immunity doctrine, which prohibits lawsuits against the state.
Alpha Marketing says it has owned the trademarks for the terms, "Arkansas Lottery," "Arkansas Lotto" and "Lottery Arkansas" for more than 18 years.
(See Arkansas Lottery sued for trademark infringement, Lottery Post, Mar. 18, 2010.)
Arkansas' lottery began in 2009, the year after voters approved creating the games to fund college scholarships.
The company sued in 2010.
Arkansas can just man up and change their name.........
If the WWF could do it and come out a winner, so can the state of Arkansas.
never know
It doesn't appear that any of the three trademarks mentioned have been federally registered which limits damages and other benefits of registration. I am wondering if Alpha Marketing tried to federally register them but were denied. If not denied, had they registered those three marks they would have a stronger case and would be able to recover (up to) triple damages.
Although it is not necessary to federally register a trademark (rights begin when a mark is first used in commerce), not doing so limits their options...
Trademarks can only be registered federally if they are used in interstate commerce. I don't know what, if anything, the company has used the trademarks for, but I don't see much of an interstate market for something called "Arkansas Lottery". That doesn't mean the company didn't register the terms as trademarks with the state.I'm wondering if the company just trademarked the terms in hopes of collecting a windfall when the state started a lottery. If so, the state should have no trouble having the trademarks invalidated, but simply quashing the lawsuit by claiming sovereign immunity is an expedient way to avoid the effort and expense.
You can register a new mark federally once used in commerce locally. One of the key advantages in registering a mark federally even though you are using it in business locally is nationwide priority for the mark. If you don't register it federally, you may be limited in future protection for your mark to only the state or geographical area you are currently active in. Of course there are other advantages of federal registration...
They had a problem like this in Texas a few years back. I forget how it was resolved. Check it out.
Wow. Present a long but informative post, comparing the situation to the domain-sitting debacle in the early Internet years, and give one example of an involved domain and not only get derided for "trying to redirect traffic" but lose the entire post as well. A little overboard there LP? BTW... I don't think that Coca-Cola (the domain-sitting example) needs any additional traffic from LP visitors.
In short, now, Fed Trademarks must be used in a business action within one year of the registration. This is apparently to prevent what has happened here. Someone with no intention of using the trademarks in their own business trying to screw someone else somewhere down the line. In other words a trademark is not an investment opportunity. It's for legitimate business use. (Yes, someone will scream that buying and reselling is a legitimate business use. And usually it is. But not in this case. And rightly so.)